Ex Parte Walter et al

Board of Patent Appeals and Interferences

Jun 29, 2012

11269861 (B.P.A.I. Jun. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/269,861 11/07/2005 Edward Walter 1033-PD1087 5073
84326 7590 06/29/2012
AT & T LEGAL DEPARTMENT - Toler
ATTN: PATENT DOCKETING
ROOM 2A-207
ONE AT & T WAY
BEDMINSTER, NJ 07921
EXAMINER
HEFFINGTON, JOHN M
ART UNIT PAPER NUMBER
2172
MAIL DATE DELIVERY MODE
06/29/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EDWARD WALTER and YOLIUS DIROO
____________

Appeal 2009-011968
Application 11/269,8611
Technology Center 2100
____________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is AT&T Intellectual Property I, L.P.
Appeal 2009-011968
Application 11/269,861

2

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1, 6, 9, 10, 13, 16-18, 21, and 29-48, which
are all the claims remaining in the application. Claims 2-5, 7, 8, 11, 12, 14,
15, 19, 20, and 22-28 are cancelled. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The present invention relates generally to “the selection and display of
multimedia content and the use of audible indicators related thereto. See
Spec., 1: ¶ [0001].

Claim 1 is illustrative:
1. A method comprising:
receiving user input indicating a selection of a first
multimedia channel from a set of multimedia channels for display;
determining a first audio indicator associated with a
content rating level of the first multimedia channel; and
providing the first audio indicator for audible output in
response to receiving the user input indicating the selection of the first
multimedia channel.

Appellants appeal the following rejections:

1. Claims 1, 6, 9, 10, 13, 16, 17, 21, 29, and 31-48 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Davis (US 5,822,123, Oct.
13, 1998 ) and Jeong (US Patent Pub. 2003/0023969 A1, Jan. 30, 2003); and
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Application 11/269,861

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2. Claims 18 and 30 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Davis and Krieger (US 7,293,275 B1, Nov. 6, 2007).

Claim Groupings
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claims as set forth below. See 37 C.F.R.
41.37(c)(1)(vii).

ANALYSIS
Claims 1, 6, 9, 10, 13, 16, 17, 21, 29, 32-34, and 39-48
Issue 1: Did the Examiner err in finding that the combination of
Davis and Jeong teaches and/or suggests a “content rating level of the first
multimedia channel,” as claimed?

Appellants contend that “Jeong fails to disclose any content rating
level for a particular multimedia channel”. (App. Br. 6.)
The Examiner found that “a channel as disclosed in the instant
application is inseparably linked to the ‘viewable’ content broadcast over the
channel. Therefore, it is reasonable to conclude that a channel in the context
of the instant application would always be broadcasting some kind of
content”. (Ans. 49.) We agree with the Examiner.
Here, the question becomes whether in the claimed invention the
“channel” itself is rated or the programming being broadcasted thereon is
being rated. We find that it is the “programming” that is rated. Evidencing
this interpretation, Appellants’ Specification discloses that “the
characteristics of the selected multimedia channel can be determined from
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Application 11/269,861

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EPG information provided by the EPG module 114.” (Spec., 6:¶[0019].) In
other words, Appellants use an electronic programming guide (EPG) for
displaying channel characteristics, i.e., “content category”, “content level”,
“play length, and the like.” (Id.) Given that EPG’s are directed to
“programming content,” we find that Appellants’ invention is concerned
with rating the content and not the channel per se.
Therefore, we agree with the Examiner that in the present invention
the “channel rating” is inseparably linked to the programming rating. With
that in mind, the Examiner found that Jeong discloses “displaying the
program rating” and “a speaker for informing the program rating by audible
signal.” (Jeong, ¶[0011].)
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of representative claim 1essentially for the reasons
indicated by the Examiner. Appellants have not presented any different or
separate arguments for claims 6, 9, 10, 13, 16, 17, 21, 29, 32-34, and 39-48.
Therefore, these claims fall for similar reasons. See 37 C.F.R. §
41.37(c)(1)(vii).

Claim 31
Issue 2: Did the Examiner err in finding that the combination of
Davis and Jeong teaches and/or suggests a “warning based on the content
rating level”, as claimed?

Appellants contend that “Davis and Jeong fails to disclose or suggest
that the first audio indicator represents a warning based on the content rating
level”. (App. Br. 6.)
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The Examiner found that Davis’ Fig. 41 shows a warning and Jeong
discloses providing an audio indicator. (See Ans. 21.) We agree with the
Examiner.
Here, we find that the collective teachings of Davis and Jeong would
have suggested to one of ordinary skill in the art an audio warning based on
the content rating level. For example, Davis’ Fig. 41 specifically illustrates
a restricted warning label and Jeong expressly states that a speaker can be
used for informing program rating (see Davis’ Fig. 41 and Jeong ¶[0011]).
Thus, we find the Examiner’s reliance on this functionality persuasive.
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of claim 31 essentially for the reasons indicated by the
Examiner.

Claims 35-38
Issue 3: Did the Examiner err in finding that the combination of
Davis and Jeong teaches and/or suggests different voices, a child’s voice, a
teenager’s voice, and/or an adult voice associated with content, as claimed?

Appellants contend that the Office does not point to any reference as
teaching or suggesting the above-noted features (App. Br. 6-8). We agree
with Appellants.
While the Examiner has cited numerous portions of the cited art (see
Ans. 25-29), the Examiner has failed to direct our attention to any specific
teachings regarding voices that are persuasive of obviousness and has
instead left it up to speculation and assumptions.
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We find that such speculation is overreaching on the Examiner’s part.
Although we appreciate that obviousness does not require absolute
predictability, at least some degree of predictability is required. The
Examiner has not made the initial factual findings required to demonstrate a
prima facie case of obviousness of claims 35-38. See In re Warner, 379
F.2d 1011, 1017 (CCPA 1967) (the examiner has the initial duty of
supplying the requisite factual basis and may not, because of doubts that the
invention is patentable, resort to speculation, unfounded assumptions, or
hindsight reconstruction to supply deficiencies in the factual basis). Here,
mere speculation is being introduced.
Therefore, constrained by the record before us, we find error in the
Examiner’s obviousness rejection of claims 35-38.

Claims 18 and 30
Issue 4: Did the Examiner err in finding that the combination of
Davis and Krieger teaches and/or suggests association of one or more
corresponding audio indicators, as claimed?

Appellants contend that “Davis and Krieger fails to teach or suggest a
user interface to facilitate an association of one or more corresponding audio
indicators with one or more corresponding channel selection actions”. (App.
Br. 12.)
Here, the rejection of claim 18 and 30 is under Davis in view of
Krieger, yet in response to Appellants’ arguments regarding Davis and
Krieger, the Examiner discusses the teachings of Davis and Jeong (see Ans.
55-57). However, the Examiner did not cite Jeong in the rejection of claims
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18 and 30, therefore, we find the Examiner’s reliance on Jeong in the
Examiner’s response to arguments is confusing and inappropriate.
Furthermore, the Examiner expressly admits that “[n]either Davis nor
Krieger disclose” the above argued feature (see Ans. 41). Instead of
directing our attention to teachings in the cited art that the claims reads on,
the Examiner merely direct our attention to other features disclosed in Davis
and thereafter conclude that “it would have been obvious to one having
ordinary skill in the art at the time of the invention to add . . .” the claimed
features.
Simply asserting that “it is obvious . . . to add” the argued features is
unsupported speculation by the Examiner, which does not amount to a
finding supportive of the Examiner’s obviousness conclusion. The
Examiner bears the initial burden of presenting a prima facie case of
obviousness, and Appellants have the burden of presenting a rebuttal to the
prima facie case. In re Oetiker, 977 F.2d 1443, 1445 (fed. Cir. 1992). Here,
the Examiner did not fulfill the initial burden.
Again, constrained by the record before us, we find error in the
Examiner’s obviousness rejection of claims 18 and 30.

DECISION
We reverse the Examiner’s § 103(a) rejections of claims 18, 30, and
35-38.
We affirm the Examiner’s § 103 rejection of claims 1, 6, 9, 10, 13, 16,
17, 21, 29, 31-34, and 39-48.
Appeal 2009-011968
Application 11/269,861

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) .

AFFIRMED-IN-PART

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